Why Your Startup Company Might Need an International Patent Application; an Attorney's View

By: Michael J Foycik Jr. 
May 05, 2013 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

Your startup company has a valuable invention, and you're considering filing a US Patent Application.  But, you're wondering whether or not to file an International Patent Application.  The answer to that depends on various factors, as follows.

Worried about foreign competitors sending infringing products into US market?  Your US patent application can stop them at the border if your file a complaint with the US Customs Service and meet the requirements.  So, if your market is strictly the US market, then you might not need an international patent application.  That might include a PCT application or an EU application.

Expecting a big success, or have investors expecting a big success?  Then you might just need an international patent application.  That's because you may be exporting goods into other countries, and would want patent protection in those countries.

When going after international patent protection, there are several ways to go.  There is a PCT (Patent Cooperation Treaty) filing, which gives a kind of patent pending status in any designated foreign countries for roughly 30 to 32 months.  This will require a national stage patent filing in the designated countries during that pendency.

Read More >> http://internationalpatentservice.com/Why-Your-Startup-Company-Might-Need.html


By: Tony Avent

When is a plant name not a plant name? The sad answer is more often than not in our current world, where marketing comes first and accuracy second. The current plant naming trend often violates the International Code of Nomenclature for Cultivated Plants (ICNCP), US Trademark Law, and occasionally the US Federal Trade Commission (FTC) rules relating deceptive business practices.

To understand the problem, let's go back in time to 1952, when the first International Code of Nomenclature for Cultivated Plants (since reported to as the Code) was published to standardize the confusing way in which plant cultivars were named. The Code sets forth the way people around the world communicate about plants, and as long as everyone abides by the Code, problems in horticultural communication are minimal. Unfortunately we have moved into a time where more and more people are under the Code due in part to both ignorance and greed, creating a taxonomic nightmare.

The current trend of improper and confusing use of cultivar names and trademarks, both by growers and marketers of plants, has done an irreparable long-term disservice to the industry and the public by hopelessly confusing the naming of plants and the communication about these plants. Even in the latest edition of Dr. Michael Dirr's wonderful Manual of Woody Landscape Plants (5th ed.), It is clearly evident, even someone as knowledgeable as Dr. Dirr does not always know which is a cultivar name and which is simply a company's marketing name.

The Nomenclature Code

To understand where the confusion lies, let's start with a few basics about plant taxonomy. The naming of cultured plants is governed by a small book, the International Code of Nomenclature for Cultivated Plants 2004. In the Preamble to the Code, the purpose is stated: "The Code aims at the provision of a stable method of naming identifiable groups of cultivating plants, avoiding and rejecting the use of names that may cause error or ambiguity or throw the above discriminates into confusion. " While the Code is not a legal document, such International Codes are usually recognized as legally valid in most court disputes.

In Principle 3, the Code states, "Each cultivar or group with a particular circuscription can bear only one accepted name, the earliest that is in accordance with the Rules." Principle 4 of the Code brings up another important point, "Names of plants must be universally and freely available for use by any person to denote a distinguishable group of plants. In some countries, plants are marketed using trademarks. of a person or some corporate body and are not there before freely available for any person to use; consequentially, they can not be considered as names. "

Article 19 of the Code further deals with cultivar names. The most pertinent section is Article 19.13, which states, "For a cultivar name to be established on or after 1 January 1959, its epithet is to be a word or words in a modern language other than Latin, except as permitted under Article 19.6, 19.7, and Article 19.24. " There are many other requirements, but these are not pertinent for discussion of the trademark issue. Now that we understand the basis for naming plants, let's look at how the improper use of trademarks has made a mockery of the spirit of the Code.


Trademark names are intended to be used only to design product origin or brands. Trademarking can be as simple as writing ™ after a name, but for a more sound legal footing, the trademark is registered with the United States Patent and Trademark Office (USPTO). The trademark then becomes a Registered Trademark® for a cost of about $ 250 (unless you have it done by a lawyer). Trademarks are owned by an individual or company and can not be affixed to an individual item. They are valid for 10 years if used correctly in commerce, and can be renewed indefinitely for 10-year periods.

A classic example of a properly used trademark is Tylenol®. If you look through a drug store, you will find the company had registered Tylenol as a trademark. The product that you purchase, however is not TYLENOL, but instead one of many products, such as TYLENOL Cold and Sinus Medicine or TYLENOL Pain Relievers. In most of these products, the generic name is acetaminophen. If a company's trademark name becomes recognized by the public as the product itself (ie generic), the trademark becomes invalid. Several commonly known examples of trademarks being invalidated because they have become generic in the minds of the consumer include: aspirin, cellophane, thermos, and escalator. Many other incorrectly used trademarks are still in effect, simply because they have not been challenged.

The current improper use of trademarks in the horticultural industry had its origin more than a half century ago. The worst culprits, in the early years, were the rose and bedding plant industry. The rose industry seems to have been the first to use nonsensical, non-conforming names for plant cultivars, while the bedding plant industry completely thumbed its nose at the Code by not even bothering to come up with any cultivar names for most of their introductions. One of the most famous roses in horticulture is one that everyone knows as Peace. Surprisingly, there is no such plant as Rosa 'Peace'. The plant we grow under this name is actually Rosa 'Madame A. Meilland'. The trade name Peace was coined by Conard Pyle Nursery, and used to market Rosa 'Madame A. Meilland' after World War II to capitalize on the post-war sentiment. The plant became known in the public's mind as the Peace rose.

Some of the larger nurseries soon realized that regardless of the cultivar name of the plant, they could come up with their own proprietary (trademarked) marketing name and use these names to promote plants which already had valid cultivar names. The idea was to convince the public that the company's marketing name was actually the name of the plant. The next step in the downward spiral was when nurserymen began intentionally giving their new plants stupid nonsensical cultivar names. Subsequent plant promotions would often only tout the marketing name, causing the consumer to often not realize the plant had a real cultivar name. The cultivar name, if included at all in ads and tags, would be printed in very small print in comparison to the "marketing name". The entire idea is for the company's marketing (trademark) name to become the generic name of the product in the consumer's mind. The practice of using nonsensical names violates the entire purpose for having an International Code of Nomenclature for Cultivated Plants while the use of trademarks as generic names violates the legal use of trademarks.

Some breeders blindly follow such trends in choosing nonsensical cultivar names, not realizing that these names are the only official name of their new introduction. A UK primrose breeder, Geoff Nicolle, wanted to name and patent his new primrose after his granddaughter Katy McSparron. Instead he patented it under the cultivar name Primula 'Prinic' PP 12,892 and marketed it under his granddaughters name. I have corresponded with his granddaughter who is furious and stubbornly insistent that the plant is named after her. Unfortunately, it's becoming quite common where people who are to be honored or commemorated with a plant being named after them are left with nothing but an invalid trademark with no plant attached. A great new plant is then stuck with a nonsensical name.

As I mentioned earlier, Article 19.13 of the Code does not allow for the use of these nonsensical names. In contrasting itself, however, the current version of the Code now allows nonsensical code name exceptions (Article 19.27). This is where political pressures have crept into what should have remained a scientific document. Privately, one of the authors of the Code told me the breeders of certain worldwide crops such as alstroemeria, carnations, and roses would raise too much of a fuss if the nomenclature committee made the words in the Code any stronger. In other words, the authors of the current edition of the Code caved to those who were already violating the Code, similar to the concept of changing laws so that the number of criminals diminish.

Many breeders and growers of new plants properly choose to try and recoup their investment in producing a new plant by securing a royalty payment from those producing the plant. Plant patents are the only legal means of protecting a proprietary plant. Patents are good for 20 years (formerly 17 years) after the date of patent filing. After this time, anyone can legally propagate and sell a previously patented cultivar. Patents require quite a bit of paperwork and a fee that many smaller growers may find a bit expensive. Many growers have the false impression that trademarks give them an easier and cheaper alternative to patents, but this is not the case.

To further complicate matters, some plants are both patented and subquently marketed under a company's trademark name. Some nurserymen think they can get the 20-year protection the plant patent provides, plus a further measure of protection by trademarking a second (marketing) name for each plant. Once the patent expires, others could propagate a previously patented plant, but in theory could not sell it under the company's trademark name. A classic example is Monrovia's Limemound spirea. At the end of its patent protection in 2003, everyone could propage Spirea 'Monhub' PP5834, but Monrovia assumed no one else could then legally sell the plant as Limemound spirea. Unfortunately both nurseries and many trademark lawyers who advise nurseries seem not to understand basic trademark law.

Trademark law states that a trademark name can be used with (not for) any product produced by the owner of the trademark. For example, if the owner of the trademark was growing four different gold spireas or 100 different trees, they could all be marketed under the same trademark name, despite being distinct cultivars. Trademark names belong only to a company, and not to a particular plant or product. In other words, a single cultivar named Limemound spirea does not exist.

Article 12.1 of the Code cites Rosa 'Korlanum', which is marketed under three different trademark names, each owned by a different company, Surrey, Sommerwind, and Vente D'ete. This causes the public to assume that there are three different roses, when they are all the same plant. In the case of Loropetalum chinensis 'Hines Purple Leaf', it is marketed under at least two different trademark names, Plum Delight, and Pizzaz. This practice is becoming more common as the lack of understanding about proper trademark use deteriorates. Are you confused yet?

The issue becomes more confusing the more you investigate. Do you remember the Cornus florida x kousa hybrid dogwoods from Elwin Orton's breeding program at Rutgers? They were patented with the cultivar names of C. 'Stellar Pink' PP7207, C. 'Galaxy' PP7204, C. 'Aurora' PP7205, C. 'Constellation' PP7210, C. 'Rutfan' PP7206, and C. 'Rutlan' PP7732. As you can see, all of the dogwoods except two were given sensual (word or words in a modern language) cultivar names. Interestingly enough, once the dogwoods hit the market, the original sensory cultivar names were changed by the breeder to nonsensical names and the original sensory cultivar names were then trademarked. For example, Cornus 'Stellar Pink' became 'Rutgan' (Stellar Pink), 'Galaxy' became 'Rutban' (Galaxy), 'Aurora' became 'Rutdan' (Aurora), 'Constellation' 'Rutlan' was marketed as (Ruth Ellen) and 'Rutfan' was marketed as (Stardust). This violates the International Nomenclature Code; section 19.13 as cited above and # 9 of the Preamble, which states "The only proper reason for changing the name of a distinguishable group of plants are either a more profound knowledge of the facts resulting from adequate taxonomic study or the necessity of giving up a name that is contrary to the Rules of a Code. " Therefore the correct names for each of these hybrids were the original cultivar names under which they were patented. The reason for the name switching is so that once the patent expires, anyone can sell the dogwoods under the nonsensical names, but in theory they can not use the breeders trademark name. By trying to make sure everyone knows the plants generically by his trade name, the breeder has, however, intentionally rendered his trademark invalid.

If you visit the United States Patent and Trademark Office website, http://www.USPTO.gov , you will see the Patent Office itself has no understanding of either US Trademark Law or the ICNCP. A classic example of this confusion occurs in the patent plant, Itea virginica 'Sprich' PP 10,988. After the fact the fact the cultivar name of 'Sprich' is not a "word or words in a modern language" (Article 19.13) and therefore violates the spirit of the Nomenclature Code, it has become the legal cultivar name once it was indicated as such in the patent application. If you read the patent application for I. virginica 'Sprich', it states, "The new Itea virginica cultivar is being marketed under the trade name Little Henry." Because a trademark can not be permanently affixed to a particular item, it shows the USPTO does not even understand their own regulations.

This use of trademarks as secondary "pseudo-cultivar" names for a particular plants violates both the spirit of the Nomenclature Code, as well as US trademark law. Trademark law clearly states if a trademark name becomes the common use (generic) name of a particular item, then the trademark becomes invalidated. Trademark lawyers have long advised nurseries to write the cultivar name in single quotes and smaller type and then the trademark name without single quotes in larger type. In their minds, this keeps their trademark valid. Nurseries are also told by their trademark lawyers as long as they enforce their trademarks, by making sure the cultivar name is always included with the trademark name, their trademarks would remain valid. This bizarre thinking, however, defeats the entire reason for improperly using trademarks, which is to trick the public into thinking the trademark name is the generic name of the product. It is this intentional deceit that will one day bring the Federal Trade Commission onto the horticultural scene.

A properly used trademark would be one such as Star® Roses, which is used to market a large group of roses under a single umbrella trademark. This trademark would have remained valid if they had not then began using their trademark to also market individual cultivars such as Rosa 'Wezaprt' as Bronze Star ™ Rose and Rosa 'Wezlavn' as Silver Star Rose.

Court Cases

Until 2006, one of the few cases that might have gone to trial was when Iverson Perennials tried to enforce a legal trademark they owned for the name Scabiosa 'Butterfly Blue'. The unpatented plant had been previously published with 'Butterfly Blue' as the cultivar name, so they were wrong in both trying to trademark a cultivar name and also by using their trademark improperly on a single product. Fortunately, a number of nurseries banded against Iverson's and the trademark infringement case was abandoned before it reached court.

Finally, in 2006, a case of improperly used trademarks actually reached the courts in Van Well Nursery Inc. et al. v. Mony Life Insurance Company et al. (decided March 16, 2006). In this complicated case, Mony Life Insurance Co. acquired property from A / B Hop Farms due to a defaulted loan. The property contained apple trees known as Smoothee and Scarlet Spur. When Mony Life Insurance Co. tried to sell the land by mentioning that it contained Smoothee and Scarlet Spur apple trees, Van Well Nursery and Hilltop Nurses sued for trademark infringement. Their contention was that the apples trees were actually the cultivars 'Snipes' and 'Gibson', although they had marketed them under the trademark names Smoothee® and Scarlet Spur. The Lanham Trademark Act, section 15, says is not the actual misuse of the trademark for a single product that makes it invalid, but instead the perception of the public that the trademark name is the product itself that renders the mark invalid.

The judge in the Van Well case correctly ruled that in the public domain, the apples were known as Smoothee and Scarlet Spur, and therefore the legally registered trademarks were now invalid, because they had become know as the product instead of the source of the product . (The Smoothee trademark was actually not immediately canceled, only because the owner was not a party in this particular lawsuit.) The Scarlet Spur trademark was canceled despite the fact the trademark owners had followed their legal advice and always included the registered trademark symbol along with the correct cultivar names when advertising the apples. The case hinged on the age-old adage in determining the validity of a trademark. A trademark must tell "who you are" and not "what you are."

This case has huge implications for those in the nursery industry who have improperly used trademarks to market individual plants for the last several decades. The case illustrates that despite best faith efforts on the part of the trademark owners to keep their trademark names valid, it is impossible once the public views the trademark name as generic. Not only will the industry be left with shameful nonsensical cultivar names that will exist as long as the plants are grown, but nurseryman who has spent large sums of money on trademarks and trademark attorney fees and then used the trademarks in violation of US Trademark Law, will be left feeling the financial sting with no way to recoup their losses. Once the Federal Trade Commission (FTC) wakes up and is urged to act as they were recently with the discrepancy of advertised and delivered pot sizes, those who market individual plants under trade names will have another fight on their hands.

It would be nice if nurseries, who are indeed ethical, but Misinformed would take the lead in reversing this terrible trend. It would also be a nice change if groups such as the Perennial Plant Association (PPA) and the American Nursery and Landscape Association (ANLA) would take a strong position on the long-term detrimental effects of dual plant naming through trademarks, both to the industry and the consuming public. The best way to end this trend is for reputable nurseries to take a public stand against this confusing practice for the long-term good of horticulture. Short of this, it is going to be up to the Garden Writers Association (GWA) and the American Public Gardens Association (APGA) to identify plants by their one and only cultivar name, and hopefully at the same time embarrass those who persist in making up stupid nonsensical names for good plants and illegally using trademarks to deceive the public.

Source >> https://articlesly.com/name-that-plant-the-misuse-of-trademarks-in-horticulture/

The AIA And Its Impact On The Independent Inventor

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

The AIA And Its Impact On The Independent Inventor
By Michael Foycik ©2011
Used with permission.

The Leahy-Smith America Invents Act, AIA for short, proposes sweeping changes to the U.S. Patent legal system and to the U.S. Patent Office itself. The “first to file” provision is of the greatest importance to independent inventors. Most of the other changes are, more or less, administrative in nature, and will be covered in future articles. This article takes a brief look at the issues affecting the independent inventor, and especially the “first to file“ provision of the AIA.

Simply put, the “first to file” law would mean whoever is first to file a patent application will be deemed the true inventor. Sounds simple, but the law also provides for a possible “derivation proceeding” which would have a very limited scope.

What does this mean for the independent inventor? For one thing, it means even the best confidentiality agreements and NDAs (non-disclosure agreements) will have questionable value. It will be difficult, and very costly, to contest inventorship under the AIA. How costly? It depends, but even now the costs of contesting inventorship may be out of reach of most independent inventors; under the AIA, far greater hurdles will exist, and the cost will be higher.

Under the AIA, independent inventors would be well advised to first file a patent application (provisional or utility, either will suffice) before showing the invention to anyone.

This is already my recommendation to inventors: file a patent application first! Do this before you show it. Do not trust in agreements or contracts to protect your rights. Too costly, you say? Not true! A provisional patent application is very cost effective, gives substantial rights, and the government filing fee is relatively low. And, if you can’t afford the government filing fee, there are even some work-around solutions for that, which I may write about in a future article.

Raed More >> http://internationalpatentservice.com/The-Aia-And-Its-Impact-On-The-Independent-Inventor.html

Trademark Disparagement? The Slants, The Redskins and the Supreme Court

By: Meghan Nugent

Acceptable Trademark Disparagement… or Disparagement at all?

People try to trademark all types of names, brands and slogans. The U.S. government, however, acts as the gatekeeper applying trademark law to decide whether or not those names or brands are worthy of protection or if they constitute trademark disparagement. One of the most newsworthy parts of trademark law is the “disparagement clause.” This clause allows the government to determine whether or not a proposed trademark is offensive.

Under U.S. trademark law, aka the Lanham Act, trademarks that disparage “… or bring … into contempt, or disrepute” any “persons, living or dead” are not allowed. In other words, any trademark seen as offensive by the U.S. Patent and Trademark Office (USPTO) will be rejected. The provision has halted the registration of many offensive trademarks over the years. (If you want to see some examples, run a simple search of the USPTO trademark database and you will see some of the ideas people have come up with!)

However, this June, the U.S. Supreme Court ruled that the disparagement clause within the Lanham Act violates the First Amendment. Read more here about how Three Early Supreme Court Decisions Shaped the U.S. Economy.

The case, Matal vs Tam, involved the Asian-American rock band The Slants, who filed an application for a trademark to register their band name with the USPTO. The office rejected the band’s application. Relying on the disparagement clause, the USPTO found the name “The Slants” was offensive toward Asian-Americans.

The Slants Fight the Disparagement Clause
The Slants said they wanted to “reclaim” a slur used against those of Asian descent. The band decided to appeal the decision. The first stop was the Trademark Trial and Appeals Board, the body within the USPTO responsible for hearing and deciding certain cases involving trademark applications and registered trademarks.

The board agreed with the trademark office. Undeterred, The Slants appealed the decision to federal court, where the band argued the disparagement clause violated the First Amendment’s guarantee of freedom of speech. The court agreed with the band upon those grounds. Standing by their original assessment and hoping to avoid being compelled to register the band’s name as a trademark, the USPTO then requested the Supreme Court hear the case. For more information about protecting your own unique name or brand, check out the Financial Poise Webinar: Choosing, Building and Protecting Your Brand.

Read More >> https://www.financialpoise.com/trademark-disparagement-and-the-us-supreme-court/


By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

Attorney Advice on:  What is the Meaning of “Patent”
by Michael Foycik, registered US patent attorney
April 18, 2013     

An important legal question is, what is the meaning of “patent” and, how is it relevant to inventors and businesspersons.  The simplest answer is that a patent is a monopoly for a limited time, which is granted by a governmental entity.

In the US, there are several main types of patent: design; utility; provisional.  But, what is the meaning of “patent” when there are several types?  Again, a short answer will be helpful, explained as follows.

A design patent covers the ornamental features of an invention which are non-functional - imagine an unusual perfume bottle shape as an example.  A utility patent covers only features which are functional, rather than ornamental – think of a car engine as an example.  A provisional patent is somewhat like a utility patent application but exists for only one year.   So, the answer to the question what is the meaning of “patent” is that it depends on the type of invention and the type of protection needed.

Raed More >> http://internationalpatentservice.com/What-is-the-Meaning-of-Patent.html

Do You Know the 5 Types of Intellectual Property?

By: Elizabeth Potts Weinstein

“Intellectual Property” (IP) are those assets of a business that are intellectual–in other words, not physical–such as copyrights, patents, and trademarks. But many business owners mix up the different types of IP, which makes it difficult for them to ask the right questions & learn how to make decisions to protect their creations.

Here’s an explanation of five different types of intellectual property, so you understand where they come from, how they are protected, and the differences between each.

1. Copyrights are creative works that have been fixed in a tangible form.

For example, these may include writings, songs, photos, video, paintings, sculptures, or audio recordings. “Fixed in a tangible form” means that it isn’t just in your head or something you speak or perform—it has been saved in some physical way (which may include in an electronic form). When multiple people create a work together, they may hold copyrights over their part of the creation (such as the lyricist and the composer of a song), or they may jointly hold the copyrights, such as two authors who collaborate on the writing of a novel. The copyright is usually held by the person who created it—even if it was paid for by someone else—unless it was a “work for hire” (which carries specific requirements according to the laws of each country).

In the United States, you need to register your copyrighted work with the U.S. Copyright Office if you want to sue someone in court, or if you want to have access to statutory damages at a later time. The cost is minimal ($35-100) and many people can handle the paperwork online themselves. It’s a great idea to reserve this for works that are important to your business and over which you’ll likely to want to actually enforce rights, such as an ebook or series of videos that you’re selling online. Filing a copyright registration on every blog post and photograph is not cost-effective or reasonable, but you may gather them in a collection and register the copyright on the entire project.

There are other rights related to copyright that are honored in certain jurisdictions. The European Union recognizes “performers’ rights,” where performers have the right to prevent recording, broadcast, or recording reproduction of their performance, for fifty years after the performance. The United States does not recognize performance rights under current federal law. Most countries besides the United States also recognize the “moral rights” of the author, where even if the author has licensed or sold rights to their work, they still have a right to attribution and to take their name off the work if it would hurt the author’s reputation.

2. Patents are grants from the government that give you exclusive rights over your invention for a specific amount of time, in exchange for full disclosure.

The moment the patent expires (twenty years from filing in the United States), anyone else can make generic versions of your work. Patents typically cover inventions like machines, electronics, methods of production, software, methods of doing business, chemicals, and pharmaceuticals. An idea isn’t patentable by itself. It must be novel, not obvious, useful, and “reduced to practice” (someone skilled in your industry must be able to read your information and make the product). That’s why you can’t patent the idea of a Star Trek transporter—no one can use your transporter blueprint to build an actual transporter (yet.)

If you have a patentable invention, you need to file a patent application as soon as possible. This is because in most places, the person who wins a dispute when one arises is the person who was first to file a patent application. In the United States, you apply for the patent with the U.S. Patent and Trademark Office (USPTO), and the process takes quite some time—sometimes years before you even receive a response (an Office Action) from them. A patent can cost thousands of dollars in fees and you almost always need a patent attorney or patent agent to handle it for you, both because of the cost and because of the complexity of the language involved in the creation of claims and the other documents filed in the patent prosecution procedure.

3. Trademarks are words, symbols, colors, sounds, or smells that someone is using in conjunction with a product or service.

Examples include the name Pepsi, the Just Do It tag line, the Apple logo, or the shape of a Coca Cola bottle. In some ways, trademarks are not property, exactly, because trademark law is designed to protect consumers from confusion and counterfeits—not to reward businesses for their tag lines and logos. Unlike copyrights and patents, trademark protection can theoretically last forever, as long as the business is still using the trademark in conjunction with their product or service. Trademark rights are limited to the particular use, such as for marketing consulting or in the sale of folding chairs.

In the United States, you obtain trademark protections under state law as soon as you are using the mark in conjunction with a product or service. However, that trademark protection is only applicable where you are using it (which may be only that city or state). Some U.S. states have a registration system, but that is in place more to put the public on notice than to grant you any additional rights.

To obtain rights over greater locations, you must register your trademark. In the United States you register your trademark with the Patent and Trademark Office. While this system is simpler than a patent application, it does require the art of figuring out exactly what to trademark and which class (category) to select. In addition, you may need the assistance of an attorney to make that decision. A trademark registration application for one trademark in one class costs a few hundred dollars and typically takes six to eighteen months to complete.

4. Trade secrets are secret information used by a business that derives its value from being secret, and where the business is invested in protecting that secrecy.

Two commonly cited examples include the recipes for Coca Cola and for the KFC “original recipe”. Other types of common trade secrets include manufacturing processes, client lists, ingredients, systems, sales methods, launch strategies, and business plans. While it is difficult to protect the secrecy of a trade secret, the benefit is that the protection can theoretically last forever.

There is no registration system for trade secrets. You obtain and protect them through your efforts in keeping them secret, such as via non-disclosure agreements, security, and procedures. Each company must enforce rights over their trade secrets via cease and desist letters and lawsuits, or they will lose rights because the information will become public. In the United States, protection is provided mostly under state laws, usually modeled off of the Uniform Trade Secrets Act.

5. Right of publicity is defined as your right to control how your name, likeness, and persona are used by others.

An example is that I have the right to prevent my name and photo from being used to promote someone else’s service, unless they obtain my permission. This right is not recognized everywhere, and in some places is pieced together from other laws, such as in right to privacy laws, trademark law, and truth-in-advertising regulations.

Source >> http://www.elizabethpottsweinstein.com/5-types-of-intellectual-property/

What is Trademark

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336


>> protection
>> application
>> infringement

A trademark is any mark, logo, or phrase that serves to distinguish one source of goods from another.

When a trademark is in actual use in commerce, common law trademark rights can often exist even without a registered trademark. These can be enforced in state courts.

A federally registered trademark can be enforced in federal courts. To get a registered trademark, it is necessary to first file a US Trademark Application.

Such an application needs the information noted in the query form shown on this page.

A trademark search is strongly recommended. Skill is required in interpreting the results, since even identical trademarks can be registered if they are in sufficiently different classes of goods/services.

To get started now:
No money is needed to get started. Once we receive the above-noted information for a trademark application, we perform a free, informal search of the trademark records and advise if a serious obstacle exists in the form of a prior similar trademark application. There is no cost or obligation for this. An experienced trademark attorney interprets the results of the informal search.

Assuming there is no prior obstacle, we prepare the draft trademark application for signature by the owner, and send it along with instructions for completion and fees. The applicant then signs, dates, and returns the draft trademark application, together with the official government filing fee and our service charge.

Read More >> http://internationalpatentservice.com/What-is-Trademark.html

Intellectual Property Punch List for Startups


When you create, design, or invent things, the rules of intellectual property (IP) determine who owns your creations, whether or not you can prevent other people from copying them, and whether or not you yourself can use them freely. If you are starting a company, you should know enough about IP to make intelligent decisions about your business to add value and reduce risk.

IP law is esoteric, arcane, and often counterintuitive. Normal business assumptions do not always apply, and can prove to be dangerous. Aggressive, thoughtful management of your IP portfolio is a sound business practice, and you should start as early as possible.

You don’t have to know a ton about the theoretical philosophy or legal underpinnings of IP in order to use it effectively. As you begin your entrepreneurial saga, be sure to pay attention to the following IP issues:

Clear trademark rights before naming things
You cannot use a brand in commerce if your use would be confusingly similar to someone else’s brand. So, do not name your company or your product or service without clearing trademark rights first. Once you choose your name, scour the internet using the search engine of your choice to ensure no one else is using it as the brand name of similar goods or services. Also check the TESS trademark database at uspto.gov to see if your name turns up. Remember that trademarks are compared on the basis of their overall visual and phonetic impression, so clever spelling inconsistencies–substituting a Z for an S, for example–should be ignored in this process.

If you cannot find your name in use anywhere else as the brand of similar products, go ahead just in case and have a formal trademark search conducted by a competent trademark lawyer. They can tell you whether you will be able to get a trademark on your brand and, perhaps more importantly, whether someone else is going to sue you if you start using it.

Then, and only then, is it safe to start naming your company and branding your products with the name that passes through the above clearance process. Remember, trademark rights are obtained neither by forming your corporation or LLC at the secretary of state’s office, nor by registering a domain name. Those ministerial items, while important, do not matter to the trademark process and should happen only after trademark rights are clear.

Everyone signs the agreement
Have your lawyer prepare a short noncompetition, nondisclosure, and IP ownership agreement to be signed by every co-founder, employee, independent contractor, and anyone else in the company who is contributing to the conception or development of creative and innovative assets. The agreement should ensure that: (i) everything they create is owned by the company; (ii) they are bound to keep all company information confidential; and (iii) they will not compete with the company while they are working for it (and, depending on your state, for some time thereafter).

Pre-audit your IP portfolio
Investors and acquiring companies really like IP, because of the exclusionary path to market it can afford. When you are being examined by a potential investor or acquirer (in a process known as “due diligence”), they will want to know the following:

Do you own your IP?
Is your IP portfolio complete? Are you protecting everything that is capable of being protected?
Is your IP strong and enforceable? If you sue someone for infringing it, will you win?
Why not be prepared for the due diligence examination ahead of time? Identify the creative and innovative assets in your company for which the answer to any of the above questions is “no,” and take remedial steps for changing the “no” to a “yes.” Then put appropriate processes and procedures in place for ensuring that the answers will henceforth always be “yes.”

Correcting IP title defects requires getting the proper ownership agreements signed between the company and the people who created the IP assets. If any creative contributor did not sign the IP agreement described above, make that happen as soon as possible.

Correcting completeness defects is simply a matter of filing for whatever patents, copyrights, and trademarks are missing in the portfolio, and instituting internal disclosure and management procedures for identifying and assessing new innovations on a constant basis so that new IP doesn’t slip through the corporate cracks in the future. Basically, every novel and nonobvious invention should be patented, every brand should be trademarked, every important piece of content should be copyrighted, and every vital secret should be protected.

Finally, correcting strength & enforceability defects requires a measure of strategic attention to ensure the company’s innovations are being protected in the strongest possible ways in light of the competitive landscape in which they exist. For some innovations, a slew of patents will be the answer; other innovations will best be kept confidential in reliance on trade secret law; for yet others, a mix of patents and trade secrets, as well as copyrights and trademarks, will provide the most bang for your buck.

Make sure NDAs don’t expire or terminate
If you own valuable information that your competitors don’t know and that gives you an advantage over them in some way – perhaps your secret formula or manufacturing technique or algorithm -- congratulations, you probably have a protectable trade secret. If you have occasion to divulge your trade secrets to an outsider, you must have that person sign a nondisclosure agreement (NDA) to maintain the secrecy of your secret. If you reveal the secret to someone who is not bound by an NDA, it is no longer protectable as a trade secret. Here’s the thing: trade secrets can last forever as long as you keep them secret. So read your NDA carefully to ensure that the obligations of secrecy do not terminate after some period of years. The person signing your NDA should be bound to keep your secrets secret for as long as they are protectable as trade secrets!

To make this process more painless, all Gust Launch founders get access to workflows to easily create one-way and two-way NDA agreements.

Patents are your friend
Patent trolls have given patents a bad name. If you create, own, or deal in technological or scientific inventions, software, certain designs, and certain other inventive creations that advance the state of the art, you need to consider filing lots of patents. Patents protect inventions, some designs, gene sequences, business methods, some plants, and software. Patents are obtained by inventing the invention and by applying for and being awarded a patent. Registration is mandatory. Patents in useful inventions last for 20 years, and 14 years for designs, from the date the application is filed, in the U.S.

In the U.S., inventors can file a document known as a provisional patent, sometimes referred to as a provisional patent application. In truth, both names are misleading because a provisional patent is neither a patent nor an application for a patent. Strictly speaking, a provisional patent is merely a document that is filed with the USPTO in which the inventor describes an invention. That’s it. This document is never examined or reviewed by the USPTO; it is merely placed on file for a year in anticipation of the filing of a follow-on nonprovisional patent application that is based on it. If, during the year after a provisional patent is filed, the inventor files a nonprovisional patent application on the invention disclosed in the earlier provisional patent that enables the same invention, the nonprovisional patent application will obtain the original filing date – called the priority date – of the provisional patent.

Nonprovisional patent applications generally cost around $10,000 for patent counsel to prepare and file. Provisional patents, however, can be much less expensive. If prepared by counsel, a thorough provisional patent can run from $3000 to $4000. But because provisional patents are never examined, they can be much less rigorously prepared than nonprovisional applications; as the inventor, you are often in a great position to draft your own provisional application asking counsel only to review before filing. This can reduce your fees to perhaps $500 or less.

Because a provisional patent can be prepared quickly and inexpensively, filing a provisional patent is useful when a company wishes to begin to obtain a measure of patent protection without committing to the expense of time and money required to prepare and file a nonprovisional patent application. After a provisional patent is filed, for example, the inventor can use the phrase “patent pending” when publicly referring to the invention disclosed in the provisional patent. This notice that a patent application is in the works can sometimes forestall others from copying the invention.

As a general rule, anyone doing a lot of inventing should be filing a lot of provisional patents. You can even include more than one invention in the same provisional while paying a single filing fee at the USPTO.

While these applications and processes may sound somewhat onerous and a little expensive, having to protect your inventions (and being allowed to protect them) is really a good sign—it means that you are developing the technologies that will give you an advantage over your competitors, and being recognized as their inventor. If you are starting a technology company, or any company really, IP must become a part of the things to which you pay attention to maximize your company’s value and reduce its risks.

Source >> https://gust.com/launch/blog/intellectual-ip-property-punch-list

What is Infringement

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

There are three main types:

>>trademark infringement
>>patent infringement
>>copyright infringement

Trademark Infringement

This occurs when one party uses a trademark that is confusingly close to a trademark owned by another. It is simple to decide in cases where one party has a registered federal trademark and is the senior user.

A federal trademark confers nationwide rights, and can be enforced in federal courts. A non-registered trademark may nonetheless confer common law trademark rights. Common law trademark rights are enforced in state courts.

It can sometimes be that simple, and trials tend to be relatively short. Often, however, the situation is not clear, and sometimes – especially where both trademarks are common law trademarks and are not federally registered - it is hard to determine who is the senior user. In those cases, it can also be hard to tell whether or not the senior user's rights are substantial enough to stop a competitor.

Contact us if you are concerned about any trademark infringement matter, for a free initial consultation. There is no risk or obligation.

Some common questions are: what kind of damages can be awarded; how much does a trademark infringement lawsuit cost; what kinds of risks exist.

Raed More >> http://internationalpatentservice.com/What-is-Infringement.html

Stronger Patents, More Startups, Better Economy


I didn’t set out to start a company. However, in 2005 I had a problem that no one else had solved. After years of contact sports and serving in the Marine Corps infantry, my joints could no longer take the pounding from running. I wanted to continue exercising, but couldn’t stand being cooped up on an elliptical machine in the gym and always found bikes to have uncomfortable seats. So working with a friend, we invented a new machine – the world’s first elliptical bicycle. Thrilled with our success and excited to help others facing the same problem, we decided to form a company to manufacturer and sell our invention. In 2008, we left our jobs and the security of steady paychecks and founded ElliptiGO Inc.

As any entrepreneur will tell you, starting a company is a risky and expensive thing to do. Since most companies fail, it’s often the worst investment a company founder will make in their lifetime. Fortunately for us, many Americans take that risk every year, and the few who succeed generate tremendous benefits for our society.

When my co-founder and I began working on our “ElliptiGO project” in 2005, the business climate for startups was a lot different than it is today. Back then, there were many more Americans trying to start new companies. The New York Times recently reported that the rate of startups has plummeted to one of its lowest levels in decades. This decline in startups should concern us all. Startups are a critical part of our economy. They create nearly half of all new U.S. jobs and a significant amount of the innovation that drives our economy and makes our world a better place to live.

One of the leading causes of this startup decline is something that we have inflicted upon ourselves. For the past decade, there has been a concerted effort in our country to weaken the U.S. patent system. While that may not seem like a big deal, the reality is that having an enforceable patent is sometimes the determining factor for whether or not an inventor takes on the risk of actually starting a company.

There’s good reason for that. Researchers at MIT have found that startups that file patents are 35 times more likely to succeed. Scholars from Harvard and New York University similarly found that patents increase a startup’s sales growth by 51 percent and the probability of securing venture capital funding by 53 percent. I know this is true from my own experience. Having a strong patent portfolio has been our primary means of defending against foreign knock-offs. It has also helped us raise capital, attract high quality talent and land great sales partners around the world.

That’s why I’m concerned about the spate of Supreme Court cases and legislation that have weakened U.S. patent rights over the past decade. These efforts have caused the U.S. to fall from first to 10th place on the U.S. Chamber of Commerce’s global index of patent system strength. We’re now tied with Hungary. Not surprisingly, venture capital is fleeing to Europe and China, with our share of global venture capital investment falling from 83 percent in 1996 to near 50 percenttoday. If we don’t stop this trend, our economy and global competitiveness will be severely harmed.

Fortunately, there is bipartisan legislation currently on the table that would be a good first step towards strengthening our patent system. The “STRONGER Patents Act,” introduced by U.S. Sens. Chris Coons and Tom Cotton in June, would make it easier for patent holders to obtain injunctions so they can stop infringers from profiting off their theft while cases play out in court. It would also treat patents like any other property, as our nation’s founders intended when they included patent rights in the U.S. Constitution. Reinstating those rights would lower the risks for potential startup founders and encourage more people to bet on themselves and their innovations. It is the kind of trajectory we need to put our patent system on if we want to re-invigorate our startup culture.

When we filed our first patent in 2006, we were two guys in a garage with an idea for a product that didn’t exist. There were literally hundreds of companies better positioned than us to bring this idea into the world. My co-founder and I would not have considered starting our company if we didn’t believe in the protection and enforceability of patents. I’m glad the patent system was stronger back then and that we decided to take the risk and start a company. I’m not sure we would have had the guts to start our company if the patent system back then was what it is now. That needs to change and that change can’t start soon enough.

Source >> https://morningconsult.com/opinions/stronger-patents-more-startups-better-economy/


By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

The AIA And Its Impact On The Independent Inventor

By Michael Foycik ©2011
Used with permission.

The Leahy-Smith America Invents Act, AIA for short, proposes sweeping changes to the U.S. Patent legal system and to the U.S. Patent Office itself. The “first to file” provision is of the greatest importance to independent inventors. Most of the other changes are, more or less, administrative in nature, and will be covered in future articles. This article takes a brief look at the issues affecting the independent inventor, and especially the “first to file“ provision of the AIA.

Simply put, the “first to file” law would mean whoever is first to file a patent application will be deemed the true inventor. Sounds simple, but the law also provides for a possible “derivation proceeding” which would have a very limited scope.

What does this mean for the independent inventor? For one thing, it means even the best confidentiality agreements and NDAs (non-disclosure agreements) will have questionable value. It will be difficult, and very costly, to contest inventorship under the AIA. How costly? It depends, but even now the costs of contesting inventorship may be out of reach of most independent inventors; under the AIA, far greater hurdles will exist, and the cost will be higher.

Under the AIA, independent inventors would be well advised to first file a patent application (provisional or utility, either will suffice) before showing the invention to anyone.

This is already my recommendation to inventors: file a patent application first! Do this before you show it. Do not trust in agreements or contracts to protect your rights. Too costly, you say? Not true! A provisional patent application is very cost effective, gives substantial rights, and the government filing fee is relatively low. And, if you can’t afford the government filing fee, there are even some work-around solutions for that, which I may write about in a future article.

Read More >> http://internationalpatentservice.com/The-Aia-And-Its-Impact-On-The-Independent-Inventor.html

Selling a Patent, Copyright, or Trademark

By: Heleigh Bostwick 

Patents, trademarks, and copyrights are all forms of intellectual property and just like any other property, intellectual property can be bought, sold, inherited, or otherwise transferred.

Inventors, authors, and artists may prefer to focus on creation and leave the work of licensing and monitoring to someone else. Selling intellectual property can be a great way to generate income, but it's also important to consider the consequences of choosing a one-time sale profit over the ongoing profit potential of licensing.

Considering selling your intellectual property? Here's what you need to know about selling the rights to that patent, trademark, or copyright.

Selling a Patent

A patent indicates that the inventor (or patent owner) now has the right to make, use, import, sell, and offer for sale the invention for up to 20 years (the length of time that the patent is valid). Inventors should be aware that the patent itself won't generate an income for the inventor, but licensing or selling the patent rights to another person or company will. Of course, whether it's a new product or a new technology, there's no guarantee that an inventor will get rich off of the invention.

Selling a patent outright can generate a lump sum of money for an inventor, but the downside is that by selling the patent, the rights to any future income are transferred to the new owner of the patent. Inventors must also consider the timing and the type of product. Say the patent is for a new technology, but it hasn't caught on yet. By selling the patent later, once the technology gets established and is at least moderately successful, the inventor can sell the patent for more money than when it was first issued.

Many inventors opt to take the licensing route because in the long run it can be more profitable. Again though, success is not guaranteed because an inventor never knows which product or technology is going to become profitable. In the case of licensing, most inventors grant an exclusive license to a single company to manufacture the product or use the technology. The inventor retains the patent rights and receives royalty checks.

Selling a Trademark

Trademarks, as defined by the USPTO, protect words, names, symbols, sounds, or colors that distinguish goods and services. A trademark can be renewed in perpetuity as long as it is associated with the same goods and services. Unlike patents, trademarks are associated with a product or a business and are not sold outright. Trademark ownership can be transferred along with ownership of the business or product the trademark represents. For example, if you sell your business, you may sell the trademark rights to the logo along with it.

Trademarks may be licensed, but the owner of the trademark is responsible for ensuring that the goods or services carrying the mark meet the standards expected of the mark. If the licensor doesn't monitor the quality of the items carrying the mark, the trademark may be deemed abandoned, and therefore unenforceable.

Selling a Copyright

Copyright protects the rights of authorship of literary, artistic, and musical works that have been tangibly expressed (i.e., written). A US copyright may be sold or transferred as long as the transfer is in writing and signed by the party relinquishing ownership. However, a copyright is rarely sold outright; more often it is transferred as part of a business agreement.

Musicians may assign copyright ownership to a record company in exchange for production and marketing as part of a recording contract. In "work for hire" situations, where someone is paid to produce a specific work, the hiring body (rather than the creator) usually owns the copyright of the produced work. Depending on the agreement, the author may or may not retain authorship, but gives up rights to reprint or reproduce the work, eliminating profit beyond the initial fee paid to produce the work.

Selling a work or a copy of the work usually doesn't transfer copyright. An author or artist retains copyright to a book or painting even if the item itself is sold. The purchaser may sell the specific copy he or she owns, but the author or artist retains the right to reproduce, replicate, and license the work for other uses.

In order to get exposure for their works without giving up ownership rights, authors, photographers, and artists sometimes use what is called a Creative Commons License that allows others to use the works without a fee as long as certain conditions are met.

Source >> https://www.legalzoom.com/articles/selling-a-patent-copyright-or-trademark

How to Get a Patent

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

How to Get a Patent
How to get a Patent? That’s a good question! The short and long answers are below.

The short answer is : In the US, file a US Utility Patent Application, or a US Design Patent Application. Note that a US Provisional Patent Application does not become a US Patent, but does give “patent pending” status.

And, do you need a US Patent Attorney? Yes and No. In theory, a patent application can be filed by the inventor. Due to the great number of legal technicalities and chances of losing rights by use of poor legal language or by failing to add the right legal language, most authorities believe it is by far the best course of action to have a US Patent Attorney prepare the patent application. Some very experienced inventors might prepare their own patent applications, although that is not common.

The longer answer is:

These are the basic steps for how to get a patent. For a Utility Patent, the goal is to get broad claims allowed by the US Patent Office, and which become part of an Issued Patent. The claims define the scope of what is legally protected by the issued patent.

The inventor should write a description of the invention, and make sketches or drawings which can show the invention. The description and drawings do not have to be very detailed, as long as they clearly explain what the inventor believes is new.

If working with a US Patent Attorney or US Patent Lawyer, something which is highly recommended, this information may be enough to start. The US Patent Attorney will then draft a more detailed version of the invention in the format required by the US Patent Office, referred to below as the USPTO (which is short for US Patent and Trademark Office).

What will the US Patent Attorney add to help the invention? Good question! The US Patent Attorney will provide the correct wording for various elements, and will provide a set of claims to set forth the legal rights proposed for the invention. Proper drafting of the specification and claims requires good knowledge of current laws and legal case decisions. It should include proper use of “means for” language which may need to be present in the claims and specification, and must be properly supported by an explanation of equivalent structures or functional elements. The US Patent Attorney can provide additional language to encompass or add features which would be known to anyone having skill in the art, in order to broaden the scope of the resulting claims.

The US Patent Attorney will send the draft application to the inventor for changes and additions. This draft application may go back and forth more than once, until the Inventor is satisfied with the draft application. At that point, the draft application is filed with the USPTO by the US Patent Attorney together with the necessary transmittal forms and legal forms.

The USPTO will send an Official Filing Receipt. After that, the USPTO will conduct a search of the prior art patents and other literature, and send an Official Action reporting the results of that search together with an explanation of any objections or rejections. The objections can be to the form or language used, including any objections to the drawings, specification, or claims. The rejections will be legally based, and can include rejections over prior art, as either “anticipated” or “obvious over” the prior art. Other rejections can include “non-operability” and “non-statutory” rejections. It is possible to respond to these objections and rejections, and in many cases these objections and rejections can be overcome by a proper response.

The US Patent Attorney can respond to any such official action received from the U.S. Patent Office. If the official action is a rejection, then a response will provide arguments in support of patentability and possibly changes to the claims. The response will also respond to any objections.

The rejections over the prior art can be overcome, when possible, by amending the claims to avoid the cited prior art, or by providing arguments in support of patentability. For example, a cited prior art patent might not work in exactly the same way as the invention, or it might not have equivalent structural or functional elements as the invention.

The USPTO will consider the Response filed by the US Patent Attorney.

Assuming the application is deemed patentable (the majority are), then a Notice of Allowance and Issue Fee Due is sent. Upon payment of the issue fee, a patent will issue.

It is that simple. This whole process can take anywhere from 12 months to 36 months, depending entirely on the U.S. Patent Examiner to which the application is officially assigned.

A more detailed explanation is as follows.

Read More >> http://internationalpatentservice.com/how-to-get-a-patent.html

How To Get A Patent For Software In India

By: pagluchulkene

India’s GDP is a function of its export of Information Technology to the Western world, let us acknowledge it far and loud, for once. There are brilliant codes written, genius software developed, in large numbers, literally every day. Tonnes of money is spent on the research and development of each of this software and hence, there is a major need to safeguard these intellectual properties – yes, they are that! – which drive India’s growth in more ways than one.

In this article, we look at protecting the intellectual rights of a software, a much-underrated entity although it makes for some of the highest copyright infringements.
Computer-related inventions can be really tricky. Firstly, you have to describe the invention very cleanly such that it makes sense and that, let me say, is not an easy job, especially when it relates to computers and software – areas not easily comprehensible to laypersons.

It is still easy to define the functionality that is required by the customer, and if you have the required coding skills, you can even build a programme that fulfills the desired functionality, but – and there is a big but here – the area that has to be protected by a patent lies somewhere in between. It lies midway between the functionality that is desired and the code that is written to achieve it. This makes defining it all very difficult, especially for those who are new to the area of patenting.

Software Patenting
“How to patent a software” is a hot question amongst many tech entrepreneurs in India, and in this day and age, when our country is undergoing a major entrepreneurial boom, we need a convincing answer to that question.

Read More  >> https://graetnewsnetwork.com/how-to-get-a-patent-for-software-in-india/

How Much Does A Patent Cost?

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

How much does a patent cost?
We try to keep your costs as low as possible, and as affordable as possible. We provide flat fee estimates in advance, at no charge to you.

In the simplest cases, where the invention is easy to describe or show in a few figures of drawing, patent application can be prepared for as little as $1800, with a government filing fee of $540 for a small entity (this cost is slightly less for electronic filing).

The formal drawings, if needed, can usually be obtained for less than $150 per sheet. One sheet might have several figures on it, depending on the complexity of the invention, thus saving money.

If the patent application is granted, the government charges an issue fee of $755 and publication fee of $300. A service charge of $80 is added for attending to preparing and filing the Issue Fee Transmittal.

The U.S. Patent Office examines the patent application and finds any relevant prior art. If the prior art is sufficiently close, they will make a rejection. A response can be filed, usually at a cover of $350 to $450. Every case is different; some are allowed without needing such an amendment or response. In some cases, a further response is necessary or desirable, and the cost is normally somewhat less than $350.

This type of rejection is fairly normal. To attempt to overcome such a rejection, the response can be filed which changes the claims to avoid the prior art, and/or presents arguments to distinguish the invention in the patent application from the prior art.

Read More >> http://internationalpatentservice.com/how-much-does-a-patent-cost.html

When, why and how to launch your startup in secret

By: James McGrath 

When you’re building your startup, the first step is to tell everybody about it, right?

While there are thousands of startups out there trying to get the attention of the press and prospective customers, there are those that deliberately avoid the limelight.

Businesses like Domo and Rev have gone the unusual route of making people sign non-disclosure agreements before letting prospective customers and funders have a play around with their products.

It’s unusual for a company to launch in complete stealth mode, and with an interconnected ecosystem it’s kind of hard to do things in complete silence these days. So why would you want to keep your startup under wraps?

The main benefits
The benefits of launching in stealth mode can be broadly sorted into three categories:

It gives you the focus to work on version 1.0 of your product without distraction

It helps build an air of mystique around your company, especially if the founders are well known

It keeps IP and the industry problem you’re targeting away from the prying eyes of potential competitors

It basically allows you the time and space to work on your product with a select group of potential clients and collaborators to keep the feedback loop really tight.

It also allows you to launch with a fully realised product which surprises and delights rather than doesn’t meet the expectations of hype.

Of course, this approach has its down side

READ: What is a startup, seriously?

The drawbacks

Then again, trying to keep a lid on things could present these three problems:

You can’t build early brand momentum if you don’t tell anybody about it

It limits the number of investors, potential customers and other parties who can provide valuable feedback on early builds

People may see your insistence that people sign non-disclosure agreements (NDAs) as a sign of unearned paranoia

In a world where there are thousands of startups vying for attention, keeping silent about yours can seem like cutting off your nose to spite your face.

But some startups swear by the benefits of launching in secret — so what’s the best way to do it?

The tools you’ll need

Some startups that choose to launch in secret do so because they’re afraid of someone stealing their idea — which isn’t always unfounded.

But IP lawyer (and Pulse contributor) Blake Knowles told The Pulse that the simplest way to avert this fear is to file a patent, which if granted, gives you exclusivity in the market you filed the patent in.

Of course, that could potentially tip off a rival if they’re savvy enough to be looking at patent applications in their area.

Meanwhile, a standard NDA could prohibit third parties talking about your idea to help protect it — but again, it’s quite limiting.

“From an IP protection perspective, any activity that exposes your product is generally incompatible with protection of the IP in the product itself, unless a patent application has been filed, or disclosures are carefully made subject to confidentiality agreements,” said Knowles.

“However, NDAs can limit the momentum of the product, and not all products or services are patentable. Spending money on patent filings needs to be strategic.

“Unfortunately, there are no other real ‘tools’ available to entrepreneurs to protect rights in the product itself, if they want to start generating interest in the market.”

Raed More >> https://www.myob.com/au/blog/when-why-and-how-to-launch-your-startup-in-secret/


By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

The US law provides for patent and trademark protection. The administrative agencies responsible for this are the US Patent Office and the US Trademark Office, which are combined and called the US Patent and Trademark Office, abbreviated as USPTO. In the following, the abbreviation USPTO will be used throughout.

Preparing a patent application
A US Patent Lawyer, also called a US Patent Attorney, normally prepares a US Patent Application for filing with the USPTO. The US Patent Lawyer works with the inventor to draft a specification having a description of the invention, including drawings when possible. The draft is then studied by the inventor, and changes are made if necessary. When the draft is accepted by the inventor, the inventor signs a form called a Declaration, claiming inventorship of the application. Once it is filed, it receives a Serial Number and an Official Filing Receipt, and thus becomes an official US Patent Application.

At some point in this process, it is advisable but not necessary to perform a US patent search. The US patent search can find prior art patents that show the extent of the closest prior art, and whether the invention has been patented at an earlier time. If an expired patent is discovered which is very close to the invention, then that expired patent can confer a “right to use” that invention. If a pending US Patent covers the invention, and has claims which are sufficiently broad to cover the invention, then it is possible that infringement would occur. It is important to know if a new product might infringe an existing unexpired US Patent. If no patent exists which covers the invention, then it is possible that the invention can be patented. As noted above, it is not necessary to conduct a patent search prior to filing a new patent application.

The Role of the USPTO in Examining the Patent Application
The US Patent Application is examined in due course by a patent examiner. The US patent examiner will be an expert in the particular art in which the invention resides. The US patent examiner will search the prior art patent literature, and will make a search report and send it to the inventor along with a first Office Action on the merits.

If an invention is finally rejected, that rejection can be appealed. In that case, it is taken up for review by a board of appellate examiners. Each appellate examiner is likely to be a USPTO Patent Attorney or USPTO Patent Lawyer. If the appeal is refused, it can be taken further to a US District Court, in which case the USPTO is represented by the Solicitor’s Office. In that case, the Solicitor in Court will be a USPTO Patent Lawyer or USPTO Patent Attorney. Such higher appeals are not frequent, but are more likely to occur when the invention is particularly valuable.

The Role of the US Patent Attorney in the Examination Process
The US Patent Attorney or US Patent Lawyer considers the Office Actions received from the USPTO, and transmit’s the Office Action to the inventor along with any advice or comments on how to respond. The US Patent Attorney or US Patent Lawyer then responds to the Office Action, usually by providing legal arguments in support of patentability.

If the Office Action is a Notice of Allowance, then the response by the US Patent Attorney or US Patent Lawyer simply transmits the Issue Fee Due along with a transmittal form required by the USPTO.

During this time, the inventor may be commercializing the invention. In this case, a successful invention might be licensed or assigned, or distribution agreements may be made. In all these cases, the US Patent Attorney or US Patent Lawyer performs an important role in making sure these agreements serve the interests of the inventor.

The Role of the US Patent Attorney or US Patent Lawyer after the Patent is Issued
Once the patent issues, it can be enforced against competitors. In that case, the US Patent Attorney or US Patent Lawyer normally first sends a warning letter to the infringing competitor. If the infringement continues and no licensing agreement or assignment agreement is reached, then a lawsuit can be filed by the US Patent Attorney or US Patent Lawyer in a US District Court or in a state court.

The filing of a lawsuit, and the defense of such a lawsuit, are usually referred to as US Patent Litigation, or simply Patent Litigation. Such lawsuits can be short or long, and many businesses with successful products consider it commercially economical to conduct Patent Litigation to protect their rights.

Foreign Entities
Foreign entities must be represented by an attorney or lawyer, in order to obtain a patent or trademark, and in order to maintain a lawsuit in the US. In a Trademark case, the US Patent Attorney or US Patent Lawyer can be appointed as the Domestic Representative of the foreign entity.

Preparing a Trademark Application
A US Trademark Lawyer, also called a US Trademark Attorney, normally prepares a US Trademark Application for filing with the USPTO. The US Trademark Lawyer works with the applicant to draft an application having a description of the goods/services together with a drawing showing the trademark. The draft is then studied by the applicant, and changes are made if necessary. When the draft is accepted by the applicant, the applicant signs a form called a Declaration, claiming ownership of the application. Once it is filed, it receives a Serial Number and an Official Filing Receipt, and thus becomes an official US Trademark Application.

At some point in this process, it is advisable but not necessary to perform a US trademark search. The US trademark search can find prior art trademarks that show the extent of the closest prior marks and whether the mark has been registered at an earlier time. If an expired trademark is discovered which is very close to the application, then that expired trademark might or might not mean the mark is available to other applicants. If a pending US Trademark Registration covers the mark and is in the same or similar field of goods as the applicant’s mark, then it is possible that infringement could occur. It is important to know if a product or service might infringe an existing unexpired US Trademark Registration. If no USPTO registration exists which covers the trademar, then it is possible that the trademark can be registered. As noted above, it is not necessary to conduct a trademark search prior to filing a new trademark application.

Read More >> http://internationalpatentservice.com/US-USPTO-Patent.html

Pick the Right Intellectual Property Law Program

By: Ilana Kowarski

Intellectual property plays a critical role in American life. According to a U.S. Patent and Trademark Office report, IP industries account for more than 38 percent of the gross domestic product.

It's no surprise then that intellectual property law – which protects people's ownership claims to their ideas, inventions and works of art – is a growing field.

Intellectual property attorneys say their skills are in demand, and experts note there are opportunities to practice IP law within any industry that involves human creativity. This means a wide array of commercial legal jobs, particularly in the rapidly expanding high-tech sector, and jobs that involve international litigation to resolve the significant number of disputes between U.S. and international companies.

[Discover what a typical day is like for an intellectual property attorney.]

This legal field is likewise becoming more central to important U.S. policy disputes, IP attorneys say. Jon Kappes, a patent lawyer and lecturer at Arizona State University's Sandra Day O'Connor College of Law, says "IP law, particularly patent law but also copyright and trademark, has in recent years become one of the most dynamic areas of the law."

Kappes says congressional members regularly propose revisions to the nation's IP laws, and there are a growing number of Supreme Court cases on this topic.

For law school hopefuls who enjoy science, art or entertainment, experts say this discipline may be an attractive option. IP law is also essential for future business attorneys to fully understand, since patents, copyrights, trade secrets and trademarks are invaluable to businesses.

[Consider a legal career focusing on either health care or intellectual property.]

"If students are interested in sort of a rapidly changing, cutting-edge area of practice, I can’t think of one that is evolving at the rate of intellectual property," he says.

Experts say that law schools vary in how well they prepare students to practice IP law. Here are three signs of a strong intellectual property law program.

1. Key courses: When exploring potential law schools, experts suggest reviewing the available IP courses. Students should make sure they can take courses on how to apply for a patent, challenge a patent and file a lawsuit alleging the violation of a patent, experts say.

Experts also advise students to look for a comparative IP law course that discusses how U.S. law on this topic differs from that of other countries. This is marketable knowledge, they say, because prospective lawyers can use this information as attorneys for multinational firms that require patents, copyrights and trademarks in multiple countries.

Benjamin Katzenellenbogen, partner and chair of the recruiting committee at the Knobbe Martens IP law firm, says future business lawyers also need to take IP courses so they can understand and flag potential problems for the companies they represent.

2. Specific training: Experts say another sign of an exceptional IP law program is whether it allows students to gain field experience through clinics, practicums, externships, clerkships or internships.

Applicants should target schools with experiential learning opportunities in the specific area of IP law that they are most interested in, whether that's trademarks, patents, trade secrets or copyrights. It's also valuable, experts say, to write for an IP law journal and publish articles on a particular specialty within intellectual property, so applicants should target schools with these types of legal writing opportunities.

Kappes also recommends prospective law students look for IP law programs that participate in the United States Patent and Trademark Office's Law School Clinic Certification Program. This allows students to help with federal patent or trademark applications if they are supervised by a licensed patent or trademark attorney.

[Learn why law schools prefer science, technology, engineering and math majors.]

3. Networking opportunities: Finally, be sure not to overlook a law school's networking avenues. Waukeshia Jackson, managing partner of the Jackson & Lowe Law Group, says it's ideal to attend a law school that has solid recruiting relationships with various, local IP law firms.

“That’s going to give you an opportunity to gain experience whether it’s working over the summer or having an externship or internship with the company or with the firm," she says.

Jackson says it's also good if the law school has an active community of local IP alumni who attend networking events.

“You can start developing those relationships early on, so if there’s a community of IP professionals in and around the law school, that is definitely going to allow you to make connections early on and to be able to maybe get a mentor," she says.

Source >> https://www.usnews.com/education/best-graduate-schools/top-law-schools/articles/2017-09-28/identify-the-right-law-school-for-an-intellectual-property-law-career

How to Patent a Design

By: Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

A design
Each “how to patent” subject is discussed in detail below. Here are ways to get a patent.

A design is anything which is not functional. A casing or cover for a working device can be a design. Other things can be designs too. A design can best be protected by a design patent application, and usually costs much less to file than a utility (“regular“) patent application. Even the government filing fee is much lower for a design patent application.

What is needed to get a design patent application? You will normally need drawings showing the design from six different orthogonal views. The application itself is very short, and has text naming the invention, describing the drawings, and ending with a claim. The drawings do not need to be like blueprints; instead, they are simplified. And, it is not necessary to have a working model.

Once filed with the US Patent Office, the design application is examined, and if granted, can mature into a design patent. But why get a design patent? For one thing, a design patent protects not only the design itself, but all obvious variations that are not within the public domain already.

By contrast, a copyright only covers copies made, which must be exact copies. And, a copyright does not cover any design, even if identical, which was not copied. So, if two inventors both make the same exact design by sheer chance, and one inventor gets a copyright, that copyright would not be usable against the other inventor. The reason is, a copyright only covers copying.

A design patent covers any design that is sufficiently close so as to infringe, even if there was no copying. A design patent is therefore valuable, yet different from a copyright.

Before getting into the details, we would like to mention that there is also something called a “provisional patent application” discussed hereunder. It gives patent pending status for one year, permitting a utility patent application to be filed at any time during that year. That is another way to get a patent. The provisional application is much less expensive than a utility patent application, and can be recommended when there is an urgent need to get a patent application on file with the US Patent Office. For example, just prior to a trade show or publication of the invention, there is an urgent need to have the idea on file with the US Patent Office. For further information, see the section below called “How to patent using a provisional patent application.”

Read More >> http://internationalpatentservice.com/How-to-Patent-a-Design.html


By: Stephan Bell

Design patents give the inventor certain rights on the appearance of his invention. It is unique as it is granted only when something new is created. Moreover, it protects only the exterior form of the creation. Therefore, a design patent concerns only the aesthetics and not the materials used or its function. The period of protection is normally for 14 years.

Acquiring a Patent

To acquire a design patent, you have to go through the Patent Office in the U.S. It is typically done through an attorney and has to fulfill a set of stringent laws before it is considered. The U.S office deals with a lot of applications for design patents and it is better going through the office. However, the service of an attorney is recommended so that all the requisite documents are submitted. In fact, the office will likely review your application if it is filed through a lawyer. This is because the office is sure that a lawyer would cover patent infringement problems. It is seen that there has been a flood of patent applications for computer programming and internet improvements. Since, there are too many identical ideas before the review committee, a competent lawyer is necessary to avoid issues. Once you receive a pending number for the patent, you can begin marketing your invention and receive rewards.

Trademark Application

It is important to know how to apply for trademark and the procedure involved in it. There are basically three stages in the application process. In the first stage, applicants have 4 choices; the trademark Lanham Act, allows applicants to apply if they have used their logo in the U.S commerce. The next option in the Act allows application if they can confirm the use of the symbol in the U.S within a year of publication. The third option allows alien applicants with a foreign registration to register the same in the United States. Lastly, it permits foreign aspirants to block the priority date as per their foreign application. In the 2nd stage, an Examiner will be appointed to assess the proposed mark. Office actions will be issued and the Examiner will correspond with the applicant regarding application defects if any. In the last stage, the trademark is ready for publication in the Federal Register.

Benefits of Trademark Registration

A trademark is a significant asset of an organization. Hence, it is vital to apply for a trademark as it ensures brand name usage only by the owner. However, infringement issues are a constant problem. That is why; it’s all the more important to register it. This protects your logo or brand from illegal use. In case of possible infringement, the owner can file a case against the organization or individual and seek damages. Additionally, after 5 years, your ownership rights are indisputable. Experienced attorneys provide comprehensive protection services in this field for a reasonable fee.

Source >> https://articlesly.com/understanding-design-patents-and-trademark-registration/


By Michael J Foycik Jr. 
The author is a patent attorney with over 28 years experience in patents and trademarks. For further information, please email at IP1lwyr@gmail.com, or call at 877-654-3336.

A program
Each “how to patent” subject is discussed in detail below. Here are ways to get a patent. A computer program can be copyrighted, but it can also often be patented. The types of protection are very different. Specifically, the inventive steps of the program can be patented, and because of this the patent can provide protection far beyond just the specific program language used.

First, a drawing is made showing the most important steps of the program as a flowchart diagram. It is usually not necessary to give every detail of the operation of the program; instead, the main features should be illustrated. The program should be protected by a utility patent application, since that will cover any type of program language. This is also sometimes called a “regular” patent application. The program steps can be explained in words and by the flowchart drawings. The drawings do not need to be like blueprints. And, it is not necessary to have a working program, as long as the steps could be followed by a skilled programmer.

This is a good point to mention that there is also something called a “provisional patent application” that gives patent pending status for one year, permitting a utility patent application to be filed at any time during that year. This is much less expensive, and is recommended when there is an urgent need to get something one file, for example just prior to a trade show or publication. Further below, there is a section called “How to patent using a provisional patent application.”

Here's a simple example showing how to patent an idea for a simple and amusing invention, where a computer program is used. The program determines sequential prime numbers and activates a light for a time corresponding to the prime number. Here, the blinking light is connected to a pencil eraser. For the moment, we aren't concerned with whether it has been done before, it is just an example. For now, the idea would be expressed in words, written just as above. Let's say the steps are: determine prime numbers in sequence from 1; wait until that number of seconds has elapsed; then blink the light ON for a number of seconds equal to the value of the prime number that has been reached. These steps would be shown in a simple flowchart. And, since it is possible to illustrate the idea in a drawing, we would also add a sketch showing where the light should be placed on the eraser. What else should be shown? The light should have a power source, for example a small solar panel or a small battery, and connecting wires should be shown connecting the power source to the light.

Read More >> http://internationalpatentservice.com/How-to-Patent-a-Program.html

Startups Need To Plan for Cyber Security Implications from Day 1

By: Bernie Klinder, MBA

Just a few years ago, technology strategy followed business strategy. Often, it was just a footnote in the business plan. That changed dramatically as technology has evolved into a disruptive advantage that enables a new startup to move faster than entrenched competitors. Today, the technology strategy often dictates the business strategy. It’s the cornerstone for communication and collaboration for all of your employees, partners, suppliers, and customers.

Even if you aren’t a tech startup, your emails, documents, communications with customers, financial records, intellectual property, strategic plans, budgets, marketing materials, etc. are all valuable to you — and may be even more valuable to someone else.

Let’s imagine a common scenario that I’ve seen a hundred times as a consultant:

Your early stage startup is working on getting a product prototype to the MVP phase. You are seeking startup funds, and are working on a detailed business plans and pitch deck. Somewhere along the way, one of the early employees or co-founders has had their email password compromised — either via a weak password, social engineering, or by clicking malware. It doesn’t matter — someone is reading every email sent from the account, as well as every attachment. They may also have access to cloud document storage accounts and SaaS apps.

For weeks the attackers do nothing — they just watch silently collecting data. Over a period of days or weeks they work to quietly move laterally and gain more access. They may install a remote access tool on the employees laptop or compromise another users email account. They don’t delete or destroy anything, and they cover their tracks as they go. At the same time, they look for potential buyers for your information — perhaps a firm overseas who sees the potential of the business and had an interest in replicating it. After all, the startup team is doing all the hard work for them.

As the startup team works on, the hackers monitor and mirror the progress. They see the code the startup developed to make the product work. The R&D for the product. The patent application draft being passed around for review. The results of the market surveys. They take all of it silently in the background and the startup team is none the wiser.

At some point the startup finally does get funded, and the team is close to perfecting the final product before launch. When they file the patent application, they discover that someone has already filed a nearly identical document. A search discovers that an identical product is for sale on a foreign website with near identical marketing. The competitor even took the logo design and product photos.

The startup team works to make improvements, and decide on the strategy forward. While they are busy, a ransomware attack encrypts the most critical documents and they get an email demanding payment to get the data back. To make things work, someone has also logged into the payroll system and redirected a few paychecks to a burner card. The startup is bleeding cash, and investors are concerned.

The following week the suppliers begin receiving emails from the company canceling or modifying orders. The customers are receiving requests to redirect purchase orders to a new bank account. Malware is being sent to customers from your email addresses. High value customers also receive emails from a competitor offering a similar product. Amazon is flooded with nearly identical products at a cheaper price. The customer credit card database from the startup website is compromised. Then they get a letter from a law firm alleging you are violating their clients patent seeking damages. Unable to deal with the onslaught, they shut down the business.

This isn’t fear mongering: I’ve seen every one of these attacks scenarios in person. Cybercrime is rapidly becoming a major reason that small businesses fail. This happens to firms of every size, but smaller firms are becoming a preferred target as they don’t have robust security capabilities.

The hard reality is that the vulnerability to the business starts as soon as you have an email address.

Startup founders need to think about information security needs right from the start. Cyber security planning needs to start with your business planning. You’ll be far too busy to work on it “later”, and trying to implement security controls once you’ve been breached is a nightmare. Every time you add a technological capability, you need to think about how you are securing it: email, sensitive documents, online accounts, bank accounts, SaaS applications. You have to think about detection, remediation, and recovery and have those capabilities in place before you need them.

Otherwise, you’re just handing your business over to someone else.

Hope this was helpful.

Source >> https://hackernoon.com/startups-need-to-plan-for-cyber-security-implications-from-day-1-8ed61c5abac8